Federal Circuit Clarifies the Broadest Reasonable Interpretation StandardPrint PDF
In In Re Suitco Surface Inc., the Federal Circuit reaffirmed its support of the Broadest Reasonable Interpretation Standard (“BRI”) standard. It is well settled law that the USPTO applies a different claim interpretation standard during the examination and reexamination process than the courts apply when construing the claims of an issued patent. Examiners at the USPTO give the words in claims their “broadest reasonable meaning” “consistent with the specification,” “as they would be understood by a person of ordinary skill in the art.” The Federal Circuit applies a different standard of review to USPTO claim constructions. The Federal Circuit reviews interpretations by the USPTO under a reasonableness standard while it reviews district court interpretations of claims in issued patents de novo (without deference).
The main justification for the BRI standard is to ensure adequate public notice of the scope of the patent. During prosecution, the USPTO can stretch the meaning of the application’s claims to their broadest reasonable bounds and the applicant can then engage the examiner with argument or amendment. Through this process ambiguities can be addressed and clarifications made to ensure the scope of the patent is commensurate with the inventor’s contribution. Application of the BRI standard also helps prevent the USPTO from incorrectly granting a patent based on a narrow interpretation that is later invalidated by a court through a broader interpretation that encompasses invalidating prior art.
The BRI standard, however, has been met with some criticism. Critics note that application of a different standard in examination than in the courts results in two different “inventions,” which is contrary to the patent statute1. They also note that the BRI standard can cause the USPTO to incorrectly reject applications due to overly-broad interpretations. And they note that the BRI standard adds another level of uncertainty to the already uncertain and unpredictable process of claim construction.
In In Re Suitco Surface Inc., the USPTO rejected certain claims of U.S. Patent No. 4,944,514 (the “’514 patent”), as anticipated during a reexamination proceeding. The ’514 patent claims a “floor finishing material” for use on athletic courts, bowling lanes, and other “floor surfaces made of wood, linoleum, terrazzo, [or] concrete.” The invention is essentially a protective layer for a floor made from a flexible thin plastic sheet that is attached to the top surface of the floor with an adhesive layer. Lines, logos, and other decorations can be etched to the underside of the sheet before it is installed.
Although the ’514 patent was an issued patent, its claims were reviewed without deference under the BRI standard by an examiner, and later by the Board, because it was the subject of an ex parte reexamination. The Board affirmed the examiner’s rejection of claim 4 in view of either Amos (U.S. Patent No. 3,785,102) or Barrett (U.S. Patent No. 4,543,765) and claim 8 in view of Amos. Claim 4 of the ’514 patent, written in Jepson claim format, is as follows:
On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor. (emphasis added).
In its rejection, the Board construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor.” The Board therefore construed the claim such that the material could be used as an intermediate layer placed below other layers rather than just as a top finishing layer. In response to the Board’s construction, the Federal Circuit held that “[a] material cannot be finishing any surface unless it is the final layer on that surface.” The Court concluded that the Board’s interpretation did not “reasonably reflect the plain language and disclosure of the ’514 patent” noting that under the Board’s construction, “a prior art reference with carpet on top of wood, on top of tile, on top of concrete, on top of a thin adhesive plastic sheet” would anticipate claim 4.
Chief Judge Rader, writing an opinion joined by Judges Prost and Moore noted that although the USPTO is to give claims their broadest reasonable construction, “[t]he broadest-construction rubric coupled with the term ‘comprising’ does not give the USPTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent.” Here, the Board’s construction was contrary to the express language of the claim and the specification which disclosed a clear plastic material that is to be the final treatment or coating of a surface and not some intermediate layer. The court concluded that the Board’s construction was unreasonable in light of the claim and specification and remanded the case back to the USPTO for a new validity analysis using the appropriate standard.
A second important issue the Federal Circuit declined to address was what deference, if any, the USPTO should give to a district court’s or the Federal Circuit’s construction of a claim in a subsequent reexamination. The ’514 patent had already been the subject of extensive litigation when the Court heard this appeal. The United States District Court for the Northern District of Illinois had construed claim terms after a Markman hearing and granted summary judgment to the defendant two different times. Each time, the Federal Circuit also construed claim terms and vacated and remanded. After the second remand, the defendant filed a request for reexamination which led to this appeal. Notably, the first time the Federal Circuit reviewed the ’514 patent it held that “[i]n the context of claim 4, ‘finishing’ clearly refers to providing a clear, uniform layer on the top surface of a floor.” On this appeal, Suitco argued that the Board should have been bound by the Federal Circuit’s earlier construction of “material for finishing” and in the alternative, “that the Board’s adopted construction [was] unreasonable.” The Federal Circuit held that it did not need to address the first argument “because even under the broadest-construction rubric, the USPTO’s construction [was] unreasonable.”
The Suitco case is an example of what some patent practitioners see as a common problem─examiners’ unreasonable application of the BRI standard. The Suitco decision should prove useful for patent applicants when they face what they feel are unreasonable claim constructions by the USPTO under the BRI standard.
1See Dawn-Marie Bey & Christopher A. Cotropia, The Unreasonableness of the Patent Office’s “Broadest Reasonable Interpretation” Standard, 37 AIPLA Q.J. 285, 294 (2009).
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.